Deepak Suryanarayanan et al.

Patent Trials and Appeals Board

Dec 4, 2019

13928290 - (D) (P.T.A.B. Dec. 4, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/928,290 06/26/2013 Deepak Suryanarayanan SEAZN.798A 6827
79502 7590 12/04/2019
Knobbe, Martens, Olson & Bear, LLP
AMAZON TECHNOLOGIES, INC.
2040 Main Street
Fourteenth Floor
Irvine, CA 92614
EXAMINER
JAKOVAC, RYAN J
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
12/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SEAZN.Admin@knobbe.com
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEEPAK SURYANARAYANAN,
EUGENE MICHAEL FARRELL, DAVID EVERARD BROWN,
ERIC JASON BRANDWINE, and AJIT NAGENDRA PADUKONE
____________

Appeal 2018-000523
Application 13/928,290
Technology Center 2400
____________

Before JEAN R. HOMERE, JASON V. MORGAN, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which constitute all of the
pending claims. See Final Act. 1 and Appeal Br. 24–27 (Claims App’x).2
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Amazon
Technologies, Inc., a subsidiary of Amazon.com. Appeal Br. 3.
2 We refer herein to the Appeal Brief filed July 5, 2017 (“Appeal Br.”), the
Answer delivered electronically August 23, 2017 (“Ans.”), the Reply Brief
filed October 20, 2017 (“Reply Br.”), the Final Office Action delivered
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Introduction
Appellant’s claimed subject matter relates to “generation and
management of a remote computing session between one or more client
computing devices and a virtual desktop instance hosted by one or more
remote data center computers of a Program Execution Service (PES)
platform.” Spec. ¶ 16. Independent claim 1 is representative of the claims on
appeal:
1. A system comprising:
one or more computers of a Program Execution Service
(PES) including processors and memory, the memory including
instructions that, upon execution, cause the one or more
computers to:
receive a request from a client computing device to
access a virtual desktop instance, the request identifying
a user of the client computing device and a type of virtual
desktop instance, wherein the type of virtual desktop
instance identifies one or more of resources associated
with an operating system hosted by the virtual desktop
instance or a set of applications to be executed by the
operating system;
identify a virtual desktop instance of the type
corresponding to the request;
determine a specified latency threshold;
select, from a plurality of available computing
devices, a host computing device operable to host the
virtual desktop instance, wherein the selected host
computing device has a communication latency with the
client computing device lower than the specified latency

electronically December 2, 2016 (“Final Act.”), and the Specification
(“Spec.”) and Figures (“Figs.”) from the Drawings filed June 26, 2013.
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threshold, and wherein the selected host computing
device is configured to host a number of instantiated
virtual desktop instances that satisfies a specified
number; and
provide, to the client computing device, access to
the identified virtual desktop instance hosted on the host
computing device, the identified virtual desktop instance
personalized according to desktop personalization
information for the user and including one or more
operating system folders mapped to storage in a data
store for the user.
Appeal Br. 24 (Claims App’x).
REFERENCES AND REJECTIONS
The Examiner relies on the following references:
Name3 Number Published Filed
Banjo US 2007/0136195 A1 June 14, 2007 Mar. 28, 2006
Khandekar US 7,577,722 B1 July 28, 2011 Jan. 27, 2010
Ghosh US 2012/0041970 A1 Feb. 16, 2012 Aug. 12, 2010
Katiyar US 2012/0260248 A1 Oct. 11, 2012 Apr. 7, 2011
Das US 2013/0073703 A1 Mar. 21, 2013 Sept. 15, 2011
Ismael US 2014/0337836 A1 Nov. 13, 2014 May 10, 2013
Kulkarni US 8,904,081 B1 Dec. 2, 2014 May 8, 2012
The Examiner rejected claims 1, 2, 4–8, 11, 12, 16, and 18 under 35
U.S.C. § 103 as obvious over the combined teachings of Das, Ismael, and
Ghosh. Final Act. 3–8.
The Examiner rejected claims 3, 9, 10, 13–15, 17, 19, and 20 under 35
U.S.C. § 103 as obvious over the combined teachings of Das, Ismael, Ghosh,

3 All reference citations are to the first listed inventor’s surname.
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and either Kulkarni, one or more of Kulkarni, Banjo, Katiyar, and
Khandekar. Final Act. 9–13.
ANALYSIS
We review the appealed rejections based on the issues identified by
Appellant, and in light of the arguments and evidence produced thereon. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments
not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant separately argues error in the rejections of claims 1 and 16,
presenting no substantively separate arguments for claims 2–15, 17–10.4 See
Appeal Br. 10–23. Based on Appellant’s arguments, claims 2–15, 19, and 20
fall with claim 1, and claims 17 and 18 fall with claim 16. See 37 C.F.R.
41.37(c)(1)(iv).
1. Claim 1
Appellant contends the Examiner errs in rejecting claim 1 because the
cited references fail to teach or suggest
select[ing], from a plurality of available computing devices, a
host computing device operable to host the virtual desktop
instance, wherein the selected host computing device has a
communication latency with the client computing device lower
than the specified latency threshold, and wherein the selected
host computing device is configured to host a number of
instantiated virtual desktop instances that satisfies a specified
number,
as recited (hereafter, the “disputed selecting limitations” or “disputed
selecting step”). See Appeal Br. 10–12. Appellant further contends that

4 Independent claims 5 and 11 recite limitations that are commensurate with
the argued limitations of claim 1 and stand rejected for the same reasons as
claim 1. See Appeal Br. 25–26 (Claims App’x); Final Act. 6–7.
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“[a]bsent improper hindsight reasoning based on the teachings of the present
application, one skilled in the art would not be motivated to combine the
teachings of Das, Ismael, and Ghosh to produce the system of Claim 1 as
alleged.” Appeal Br. 12; see also id. at 13–14. Appellant’s arguments are
unpersuasive.
a. The Disputed Selecting Step
The Examiner finds that the combined disclosures of Ismael and
Ghosh teach the disputed selecting limitations. See Final Act. 4–6. In
particular, the Examiner finds Ismael teaches “a selected host computing
device is configured to host a number of instantiated virtual desktop
instances that satisfies a specified number,” as recited, and Ghosh teaches
“select[ing], from a plurality of available computing devices, a host
computing device operable to host the virtual desktop instance[, wherein the]
selected host computing device has a communication latency with a
computing device lower than the specified latency threshold,” as recited.
Final Act. 5, 6 (citing Ismael ¶ 64; Ghosh ¶¶ 26, 30).
Appellant contends “Das contains no teachings or suggestions with
regard to selection of a host computing device.” Appeal Br. 10. This is
unpersuasive because, as discussed above, the rejection does not rely on Das
for this requirement.
Appellant also contends:
Ismael is limited to disclosing the control of the instantiation of
virtual machine instances on preselected host computing de-
vices based a count of the number of virtual machine instances
already instantiated on the host computing device. Ismael is
silent regarding a selection of a host device from a plurality of
physical computing devices based on the number of instantiated
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virtual machine instances. Ismael therefore cannot teach or sug-
gest a Program Execution Service that can “select, from a plu-
rality of available computing devices, a host computing device
operable to host the virtual desktop instance, . . . wherein the
selected host computing device is configured to host a number
of instantiated virtual desktop instances that satisfies a specified
number,” as recited.
Appeal Br. 11 (emphasis added). This is unpersuasive because the rejection
relies on Ghosh, not Ismael, for teaching “select[ing], from a plurality of
available computing devices, a host computing device operable to host the
virtual desktop instance,” as recited. The test is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of the cited references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Appellant further contends:
Ghosh does not contain disclosure related to selecting a
computing device for hosting a virtual desktop based on hosting
“a number of instantiated virtual desktop instances that
satisfies a specified number.” Therefore, Ghosh, alone or in
combination with Das or Ismael, cannot teach or suggest
“select, from a plurality of available computing devices, a host
computing device operable to host the virtual desktop instance,
. . . wherein the selected host computing device is configured to
host a number of instantiated virtual desktop instances that
satisfies a specified number,” as recited.
Appeal Br. 12 (emphasis added). This is similarly unpersuasive, because the
rejection relies on Ismael, not Ghosh, for teaching that “the selected host
computing device is configured to host a number of instantiated virtual
desktop instances that satisfies a specified number,” as recited. One cannot
show nonobviousness by attacking references individually when the
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rejection is based on a combination of references. In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
b. Hindsight and Motivation to Combine
Appellant contends that “[a]bsent improper hindsight reasoning based
on the teachings of the present application, one skilled in the art would not
be motivated to combine the teachings of Das, Ismael, and Ghosh to produce
the system of Claim 1 as alleged.” Appeal Br. 12. In particular, Appellant
contends that, because Ismael “specifically appl[ies] to virtual machines
operating in a malware detection system,” “[t]he teachings of Ismael would
not be applicable to the distributed virtual machine provisioning systems and
methods, including selecting from a plurality of possible host devices, as
recited in the claims.” Id. at 13; see also Reply Br. 6 (“Because the claims
are specifically drawn to ‘selection of a host device,’ one skilled in the art
would have no reason to look to the teachings of Ismael because Ismael
contains no disclosure related to methods of selecting a host device.”). Thus,
Appellant’s hindsight/motivation argument hinges on whether Ismael
constitutes analogous art to Appellant’s invention.
Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is
reasonably pertinent if, even if in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
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considering his [or her] problem.” In re Clay, 966 F. 2d 656, 659 (Fed. Cir.
1992); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007)
(explaining, in the context of combining the teachings from references with
different primary purposes, that “[i]t is common sense that familiar items
may have obvious uses beyond their primary purposes, and a person of
ordinary skill often will be able to fit the teachings of multiple patents
together like pieces of a puzzle”).
Here, Ismael explains its teachings “relate[] to a system, apparatus and
method that optimizes the allocation of resources used by multiple virtual
machine instances.” Ismael ¶ 1. Appellant does not persuade us of error in
the Examiner’s determination for why Ismael is reasonably pertinent to
claim 1:
Appellant’s invention is drawn to selection of a host
device upon which to run a virtual machine. Ismael is useful in
that endeavor as the teachings of Ismael provide an advent-
ageous form of resource management control related to host
machines – such as ensuring that the number of instantiated
virtual machines on a selected host are within threshold
boundaries.
Ans. 8–9 (citing Ismael ¶ 64 (explaining, inter alia, that its provisioning
logic manages instantiating virtual machines (VMs) “and monitoring the
number of VM instances concurrently utilized within the MCD [(malware
content detection)] system [] to ensure that the number of VM instances do
not exceed a predetermined VM threshold”)).
Regarding Appellant’s contention that the Examiner’s rejection
constitutes “improper hindsight reasoning” (Appeal Br. 12), we note “[a]ny
judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning, but so long as it takes into account only
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knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure, such a reconstruction is proper.” In re
McLaughlin, 433 F.2d 1392, 1395 (CCPA 1971). Further, while a reason to
combine teachings from the prior art “may be found in explicit or implicit
teachings within the references themselves,” it also may come from “the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed.
Cir. 1998)); see also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
1324, 1329 (Fed. Cir. 2009) (explaining that “an analysis of obviousness . . .
may include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference”).
Ultimately, “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR, 550
U.S. at 418 (quoting Kahn). Here, the Examiner determines that Ismael’s
advantageousness for virtual machine resource management provides the
motivation to combine Ismael’s teachings with those of Das and Ghosh. See
Final Act. 5 (citing Ismael ¶ 64). Appellant does not persuade us of error in
this determination, because it meets the standard set forth by Kahn and KSR.
c. Claim 1 Conclusion
Accordingly we sustain the § 103 rejection of claim 1. In doing so, as
consistent with the foregoing, we adopt as our own the findings and
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reasoning of the Examiner as set forth in the rejection and in the Answer.
We also, therefore, sustain the rejections of claims 2–15, 19, and 20, for
which Appellant offers no substantively separate arguments.
2. Claims 16 and 18
Dependent claim 16 recites “receiv[ing] a subsequent request from the
computing device to access a different type of virtual desktop instance.”
Appeal Br. 27 (Claims App’x). Appellant contends the Examiner errs in
finding Das teaches that recitation of claim 16, because “[n]othing in the
cited portions of Das discloses receiving a subsequent request from the same
computing device for a different type of virtual desktop instance.” Appeal
Br. 22; see also id. at 23 (arguing error in the rejection of dependent claim
18 for the essentially the same reason).
The Examiner responds that Das teaches the disputed limitations of
claim 16 (and also claim 18) by its disclosure of presenting a user “with
multiple desktops from which to select, e.g. an engineering desktop, a
finance desktop, etc.” Ans. 8 (citing Das ¶¶ 78–80). Appellant replies that
“even if Das disclosed a subsequent request, the cited portion of Das
suggests that a subsequent request would be for the same type of virtual
desktop instance, rather than for a different type, as recited.” Reply Br. 7.
Appellant’s argument is unpersuasive. Appellant construes the
disclosure of Das too narrowly. By teaching that a user may select from
multiple available types when the user requests a virtual desktop, an
ordinarily skilled artisan would have understood Ismael to at least suggest
that a subsequent request will be for a different type of virtual desktop. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421.
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Accordingly, we sustain the rejections of claims 16 and 18. We also,
therefore, sustain the rejection of claim 17, for which Appellant offers no
substantively separate arguments.
DECISION
The Examiner did not err in rejecting claims 1–20 as unpatentable
under 35 U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–8, 11,
12, 16, 18
103 Das, Ismael,
Ghosh
1, 2, 4–8, 11,
12, 16, 18

3 103 Das, Ismael,
Ghosh, Kulkarni
3
9, 10, 13, 14 103 Das, Ismael,
Ghosh, Banjo
9, 10, 13, 14
15, 17 103 Das, Ismael,
Ghosh, Banjo,
Katiyar
15, 17
19 103 Das, Ismael,
Ghosh, Banjo,
Khandekar
19
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED